worlds vs activision blizzard markman hearing claims

ii

UNITED STATES DISTRICT COURT FOR THE DISTRICT OF MASSACHUSETTS

WORLDS, INC.,

Plaintiff,

v.

ACTIVISION BLIZZARD, INC., BLIZZARD ENTERTAINMENT, INC. and ACTIVISION PUBLISHING, INC.,

Defendants.

) ) ) ) ) ) ) ) ) )))

Civil Action No. 1:12-CV-10576 (DJC) Activision Blizzard, Inc., Blizzard Entertainment, Inc., and Activision Publishing, Inc.s Opening Claim Construction Brief (Leave to file granted on April 14, 2013)

ACTIVISION BLIZZARD, INC., BLIZZARD ENTERTAINMENT, INC. AND ACTIVISION PUBLISHING, INC.S

OPENING CLAIM CONSTRUCTION BRIEF

Case 1:12-cv-10576-DJC Document 63 Filed 04/22/13 Page 1 of 51

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TABLE OF CONTENTS

I. INTRODUCTION ...................................................................................................... 1

II. THE NATURE AND STAGE OF THE CASE .......................................................... 2

III. THE PATENTS-IN-SUIT .......................................................................................... 4

IV. THE LAW OF CLAIM CONSTRUCTION ............................................................... 7

V. THE PROPER CONSTRUCTION OF THE DISPUTED TERMS ......................... 11

A. POSITION OF LESS THAN ALL OF THE OTHER USERS AVATARS.. 12

B. DETERMINING, FROM THE RECEIVED POSITIONS, [A/THE] SET OF THE OTHER USERS AVATARS THAT ARE TO BE DISPLAYED ............................................................................... 16

C. PARTICIPANT CONDITION / CONDITION ........................................... 20

D. PROGRAMMED TO LIMIT . . . .................................................................... 26

E. AVATAR ........................................................................................................ 28

F. CLIENT PROCESS / SERVER PROCESS ................................................ 30

J. TERMS THAT ARE INDEFINITE ................................................................... 31

1. SYNCHRONOUSLY DISSEMINATING POSITIONS ..................... 32

2. THIRD USERS PERSPECTIVE ............................................................. 34

3. A RENDERING IN WHICH ALL OF A PERSPECTIVE VIEW OF A LOCAL USER AVATAR OF THE LOCAL USER IS DISPLAYED ............................................................................... 36

VI. CONCLUSION ......................................................................................................... 38


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TABLE OF AUTHORITIES

Page(s) CASES

Allen Engg Corp. v. Bartell Indus., Inc., 299 F.3d 1336 (Fed. Cir. 2002)................................................................................................37

Alloc, Inc. v. Intl Trade Commn, 342 F.3d 1361 (Fed. Cir. 2003)..................................................................................................9

AquaTex Indus., Inc. v. Techniche Solutions, 419 F.3d 1374 (Fed. Cir. 2005)................................................................................................10

Bicon, Inc. v. The Straumann Co., 441 F.3d 945 (Fed. Cir. 2006)..................................................................................................28

Wright Flow Control Corp. v. Velan, Inc., 438 F.3d 1374 (Fed. Cir. 2006)....................................................................................10, 15, 16

Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342 (Fed. Cir. 2005)..........................................................................................32, 37

Energizer Holdings, Inc. v. Intl Trade Commn, 435 F.3d 1366 (Fed. Cir. 2006)................................................................................................33

Halliburton Energy Servs., Inc. v. M-I LLC, 514 F. 3d 1244 (Fed. Cir. 2008).........................................................................................24, 25

Honeywell Intl, Inc. v. Intl Trade Commn, 341 F.3d 1332 (Fed. Cir. 2003).................................................................................... 25, 31-32

Honeywell Intl, Inc. v. ITT Indus., Inc., 452 F.3d 1312 (Fed. Cir. 2006)................................................................................................10

Innova/Pure Water, Inc. v. Safari Water Filtration Systems, Inc., 381 F.3d 1111 (Fed.Cir.2004)....................................................................................................8

Jansen v. Rexall Sundown, Inc., 342 F.3d 1329 (Fed. Cir. 2006)..................................................................................................8

LizardTech, Inc. v. Earth Res. Mapping, Inc., 433 F.3d 1373 (Fed. Cir. 2006)........................................................................................ 2, 9-10

Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996) ............................................................................................................... 7-8


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Merck & Co. v. Teva Pharm. USA, Inc., 395 F.3d 1364 (Fed. Cir. 2005)................................................................................................29

Netword, LLC v. Centraal Corp., 242 F.3d 1347 (Fed. Cir. 2001)............................................................................................9, 13

Novo Industries, L.P. v. Micro Molds Corp., 350 F.3d 1348 (Fed. Cir. 2003)................................................................................................25

Nystrom v. Trex Co., 424 F.3d 1136 (Fed. Cir. 2005)................................................................................................10

On Demand Machine Corp. v. Ingram Indus., Inc., 442 F.3d 1331 (Fed. Cir. 2006).................................................................................... 10, 14-15

Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005)........................................................................................ passim

Renishaw PLC v. Marposs Societa per Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998).............................................................................. passim

SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1345 (Fed. Cir. 2001) ..................................................................................................................................9

Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)..........................................................................................8

STATUTES

35 U.S.C. 112, 2 ............................................................................................................... passim


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I. INTRODUCTION

Plaintiff Worlds, Inc. (Worlds) alleges that Activision1 infringes 55 claims of five

related patents-in-suit. The patents-in-suit are directed to a client-server network that enables a

large number of users to interact in a virtual world displayed on a computer screen. Users

interact in the virtual world through an avatar, which is a graphical representation of the user

in the virtual world. The fundamental issue that the patents seek to address is the need to ensure

that users (called clients) do not get overwhelmed by the crowds of avatars likely to occur in a

large-scale virtual world. The patents refer to this problem as crowd control. To solve the

problem of crowd control, the patents disclose a system in which the server sends each client

information for no more than a set maximum number of other users.

As explained below, Activision proposes constructions for the claim terms that are

consistent with the intrinsic evidence, including the language of the claims themselves as read in

light of the patent specification and the prosecution histories. Indeed, it is essential in this case

to view the claims in the context of the specifications description of the alleged invention.

Interpreting the claims without due consideration of the teachings of the specification and the

problems that the patents purport to solve would result in hopelessly overbroad claims that far

exceed the scope of what the patents disclose. Thus, as shown below, Activision adheres to the

Federal Circuits view that [t]he construction that stays true to the claim language and most

naturally aligns with the patents description of the invention will be, in the end, the correct

construction. Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005).

Worlds approach to claim construction, on the other hand, is contrary to law and

inconsistent with the intrinsic evidence. In most instances, rather than interpret the claim 1 Activision refers to defendants Activision Blizzard, Inc., Blizzard Entertainment, Inc. and Activision Publishing, Inc.


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language based on the specification, Worlds takes the position that no construction of the claim

term is necessary. Although Worlds will undoubtedly assert that it is relying on the ordinary

meaning of these terms, Worlds position is simply an effort to ignore the disclosure of the

patents and read the claims in a vacuum. Worlds approach is an impermissible but common

stratagem of patentees to say little about claim terms during construction so that they may argue

that the claims mean whatever they want in urging infringement.

The requirement that claim terms are given their ordinary meaning does not mean that

terms need not be construed. To the contrary, the ordinary meaning of a claim is its meaning to

the ordinary artisan after reading the entire patent. Phillips, 415 F.3d at 1321. Thus, the claims

must be construed in light of the written description, but not beyond it, because otherwise they

would be interpreted to cover inventions or aspects of an invention that have not been disclosed.

LizardTech, Inc. v. Earth Res. Mapping, Inc., 433 F.3d 1373, 1375 (Fed. Cir. 2006).

For the reasons set forth herein, Activision respectfully requests that the Court adopt

Activisions proposed constructions for the disputed terms.

II. THE NATURE AND STAGE OF THE CASE

On March 30, 2012, Worlds filed this action against Activision for alleged infringement

of four patents: U.S. Patent Nos. 7,181,690 (the 690 patent), 7,493,558 (the 558 patent),

7,945,856 (the 856 patent), and 8,082,501 (the 501 patent) (respectively, Declaration of

Kathryn Hong in Support of Activisions Opening Claim Construction Brief (Hong Decl.)

Exs. 1-4). On September 21, 2012, Worlds amended its Complaint to add a claim of

infringement of U.S. Patent No. 8,145,998 (the 998 patent), which issued on March 27, 2012

(Hong Decl. Ex. 5). Worlds currently alleges infringement of the following claims: 690 patent

claims 1-20; 558 patent claims 4-9; 856 patent claim 1; 501 patent claims 1-8, 10, 12, 14-16;


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and 998 patent claims 1-3, 7-8, 11-20.2

The patents-in-suit are all part of the same patent family and share a common

specification. The earliest issued of the asserted patents the 690 patent was filed on

August 3, 2000, as a continuation of a parent application that was filed in 1996. Since that time,

Worlds has filed a succession of continuation applications that led to the issuance of the five

patents-in-suit. The most recently issued of the patents-in-suit the 998 patent was not filed

until March 19, 2009 (more than 12 years after the original parent application was filed) and did

not issue until March 27, 2012 (more than 15 years after the original parent application was

filed).

Activision Blizzard is the worlds most successful video game company. Worlds claims

of infringement are directed against Activisions Call of Duty and World of Warcraft video game

products, which are two of the most commercially successful video games in history.

Worlds is a patent holding company whose primary business is the licensing and

enforcement of this family of patents. Worlds was formed in the mid-1990s as a small start-up

company, during which time Worlds developed and hosted some virtual worlds systems.

Worlds virtual worlds systems never achieved substantial commercial success. As a result, in

2001, Worlds went inactive for six years because the company was not able to sustain its

business. Worlds restarted its operations in 2007, largely as a patent assertion entity. Worlds

place of business is the home of its CEO, Thomas Kidrin.

This lawsuit is in discovery. Pursuant to the Courts scheduling orders and further

agreement by the parties, Worlds and Activision exchanged proposed claim terms on March 20,

2 On April 17, 2013, counsel for Worlds notified counsel for Activision via e-mail that Worlds is no longer asserting infringement of 558 patent claims 1-3 and 998 patent claim 21 against Activision.


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2013; exchanged proposed constructions for the proposed claim terms on March 29, 2013; and

met-and-conferred multiple times in an attempt to narrow the disputed terms for construction. A

Markman hearing before the Court is currently scheduled for June 27, 2013.

III. THE PATENTS-IN-SUIT

The patents-in-suit are directed to a client-server network system for enabling multiple

users to interact with each other in a virtual world. The patents explain that [a] client-server

network is a network where one or more servers are coupled to one or more clients over a

communications channel. Hong Decl. Ex. 1, 690 patent at 1:15-17.3

The specification of the patents-in-suit explains that [t]he present invention provides a

highly scalable architecture for a three-dimensional graphical, multi-user, interactive virtual

world system. Id. at Abstract. The term highly scalable means that the system has the ability

to allow a very large number of users to connect to and interact in the virtual world at the same

time. In the system disclosed in the patents-in-suit, each user is represented visually in the

virtual space by an avatar and interacts with a client system that is networked to a virtual world

server. Id. at 3:4-5. Each user is free to move his or her avatar around in the virtual world. In

order that each user see[s] the correct location of each of the other avatars, each client machine

sends its current location, or changes in its current location, to the server and receives updated

position information of the other clients. Id. at 3:29-34.

Figure 1 of the 690 patent below provides a depiction of two users that are each

represented in a virtual world by a penguin avatar.

3 1:15-17 refers to column 1, lines 15-17. Citations to the patents-in-suit are made by referring to the column number followed by a colon and then the line numbers that is, [column number]:[line numbers]. For ease of reference, all of the patent citations are to the specification of the 690 patent, which is identical in all material ways to the specification of the other four patents-in-suit.


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Claim 1 of the 690 patent is representative of the asserted claims of the patents-in-suit

(emphasis added):

1. A method for enabling a first user to interact with other users in a virtual space, wherein the first user and the other users each have an avatar and a client process associated therewith, and wherein each client process is in communication with a server process, wherein the method comprises:

(a) receiving a position of less than all of the other users avatars from the server process; and

(b) determining, from the received positions, a set of the other users avatars that are to be displayed to the first user,

wherein steps (a) and (b) are performed by the client process associated with the first user.

The two claim limitations highlighted above relate to two concepts that are central to the patents-

in-suit: (1) server filtering, by which the server filters which information to send to a client so

that the client will receiv[e] a position of less than all of the other users avatars and (2) client

filtering, by which the client filters the information received from the server to determin[e],

from the received positions, a set of the other users avatars that are to be displayed.


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Server Filtering. The patents-in-suit state that in order for the virtual world [to be]

scalable to a large number of clients, the virtual world server must be much more discriminating

as to what data is provided to each client[]. Hong Decl. Ex. 1, 690 patent at 3:41-44. The

patents refer to this need for the server to be selective as crowd control and note that [c]rowd

control is one of the tougher problems solved by the present system. Id. at 13:23-24 (emphasis

added). According to the patents-in-suit, crowd control is needed in some cases to ensure

that neither client 60 nor user A get[s] overwhelmed by the crowds of avatars likely to occur in a

popular virtual world. Id. at 5:31-35. To allow a user to interact effectively with a large

number of other users in a virtual space, the server must limit how much information about the

other users it sends to each client. At the time of the filing of the patents-in-suit in the 1990s,

limiting the amount of data sent by the server to each client was necessary because of the

constraints on network capacity and the processing power of client computers at that time. Thus,

if the server sent data about a large number of users to a client, the client might be

overwhelmed because it might not be able to handle processing such a large amount of data.

The patents-in-suit purport to solve this problem of crowd control in a specific manner

namely, by providing a [s]erver 61 [that] maintains a variable, N, which sets the maximum

number of other avatars A will see. Id. at 5:31-37 (emphasis added); see also id. at 13:25-32

(In a typical situation, the number of avatars in a room is too large to be handled by client 60

and displayed on display 122 . Server 61 addresses this problem by maintaining, for each user,

a list of the N avatars nearest to the location of that users avatar.)

Thus, the patents-in-suit disclose a client-server architecture where the server maintains a

set maximum number of the other users avatars that it will send to each client. The patents

explain, Once the number of avatars to be shown is determined, server 61 determines which N


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avatars are closest to As avatar, based on which room of the world As avatar is in and the

coordinates of the avatars. Id. at 5:45-48. Thus, if a virtual space has 100 users, and the value

of N is set at eight, the server identifies the eight users who are closest to a particular client and

sends positions for only those eight users avatars to that client. The client does not receive any

information at all for the other 92 users in the virtual space. Identifying no more than a set

maximum number of the other users avatars to send to each client ensures that each client is

able to handle the processing of the data it receives. This is how the invention described in the

patent addresses the problem of crowd control to provide a highly scalable architecture.

Client Filtering. In addition to the set maximum number N that is imposed by the

server, the patents also disclose that each client may further filter the number of other avatars

that it displays. For example, the client may maintain[] a variable, N, which might be less than

N, which indicates the maximum number of avatars client 60 wants to see/or hear. Hong Decl.

Ex. 1, 690 patent at 5:37-40 (emphasis added). If N is less than N, the client then uses

position data to select N avatars from the N avatars provided by the server. Id. at 6:6-8. The

patents disclose that [o]ne reason for setting N less than N is where client 60 is executed by a

computer with less computing power than an average machine and tracking N avatars would

make processing and rendering of the virtual world too slow. Id. at 5:41-45. Thus, in a system

where N = 8 at the server and N = 6 at the client, a client receives data for eight of the other

users in the virtual space but might process and display data for only six avatars because it has

less computing power than an average machine.

IV. THE LAW OF CLAIM CONSTRUCTION

A patent claim provides the public with notice of the metes and bounds of an invention.

Before determining whether a patent claim is infringed, the meaning and scope of the claim must

be decided. See Markman v. Westview Instruments, Inc., 517 U.S. 370, 372 (1996). This


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process is referred to as claim construction. Determination of the meaning and scope of the

patent claims is a matter of law reserved exclusively for the Court. Markman, 517 U.S. at 372.

The Patent Claims. In general, claim language is given [its] ordinary and customary

meaning which is the meaning that the term would have to a person of ordinary skill in the art

in question at the time of the invention, i.e., as of the effective filing date of the patent

application. Phillips v. AWH Corp., 415 F.3d 1303, 1312-13 (Fed. Cir. 2005) (quoting

Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996) and citing

Innova/Pure Water, Inc. v. Safari Water Filtration Systems, Inc., 381 F.3d 1111 (Fed.Cir.2004)).

The person of ordinary skill in the art is deemed to read the claim term not only in the context

of the particular claim in which the disputed term appears, but in the context of the entire patent,

including the specification. Id. at 1313. Thus, [p]roperly viewed, the ordinary meaning of a

claim term is its meaning to the ordinary artisan after reading the entire patent. Id. at 1321. As

a result, a patents claims are not construed in a vacuum, but rather in the context of the intrinsic

evidence, viz., the other claims, the specification, and the prosecution history.4 Jansen v. Rexall

Sundown, Inc., 342 F.3d 1329, 1333 (Fed. Cir. 2006).

The Patent Specification. The law requires that the specification of the patent

adequately describe the invention set forth in the claims. Phillips, 415 F. 3d at 1312. The

descriptive part of the specification aids in ascertaining the scope and meaning of the claims

inasmuch as the words of the claims must be based on the description. The specification is,

thus, the primary basis for construing the claims. Id. at 1315 (citation omitted; emphasis

added). Moreover, [t]he close kinship between the written description and the claims is

4 The intrinsic evidence consists of the patent specification (i.e., the figures and written description), the claims, and the record of the patents examination by the United States Patent and Trademark Office (USPTO), which is commonly referred to as the prosecution or file history.


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enforced by the statutory requirement that the specification describe the claimed invention in

full, clear, concise, and exact terms. Id. at 1316 (quoting 35 U.S.C. 112, 1). Indeed, the

USPTO rules require that the terms and phrases used in the claims must find clear support or

antecedent basis in the description so that the meaning of the terms in the claims may be

ascertainable by reference to the description. Id. at 1316-17 (quoting 37 C.F.R. 1.75(d)(1))

(emphasis added).

Thus, it is well-established law that claims must be read in view of the specification, of

which they are a part. Id. at 1315. The specification is always highly relevant to the claim

construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a

disputed term. Id. (citation omitted). The claims are directed to the invention that is described

in the specification; they do not have meaning removed from the context from which they arose.

Netword, LLC v. Centraal Corp., 242 F.3d 1347, 1352 (Fed. Cir. 2001).

The Federal Circuit has acknowledged that the distinction between using the

specification to interpret the meaning of a claim and importing limitations from the specification

into the claim can be a difficult one to apply in practice. Phillips, 415 F. 3d at 1323.

Nevertheless, where the specification makes clear at various points that the claimed invention is

narrower than the claim language might imply, it is entirely permissible and proper to limit the

claims. Alloc, Inc. v. Intl Trade Commn, 342 F.3d 1361, 1370 (Fed. Cir. 2003) (citing SciMed

Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1345 (Fed. Cir. 2001)).

The claims of a patent may be broadly written, but the claims cannot enlarge what is patented

beyond what the inventor has described as the invention. Netword, LLC, 242 F.3d at 1352; On

Demand Machine Corp. v. Ingram Indus., Inc., 442 F.3d 1331, 1340 (Fed. Cir. 2006) ([C]laims

cannot be of broader scope than the invention that is set forth in the specification.); see also


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LizardTech, 433 F.3d at 1375 ([W]hatever form the claims are finally issued, they must be

interpreted, in light of the written description, but not beyond it, because otherwise they would

be interpreted to cover inventions or aspects of an invention that have not been disclosed . One

does not receive entitlement to a period of exclusivity for what one has not disclosed to the

public.) (Lourie, J., concurring).

Consistent with these principles, the Federal Circuit has repeatedly found that a patentee

is not entitled to a claim construction divorced from the context of the written description and

prosecution history. Nystrom v. Trex Co., 424 F.3d 1136, 1144-45 (Fed. Cir. 2005); see also

Honeywell Intl, Inc. v. ITT Indus., Inc., 452 F.3d 1312 (Fed. Cir. 2006) (holding the fuel

injection system component must be limited to a fuel filter because that was the only thing

disclosed by the specification); Curtiss-Wright Flow Control Corp. v. Velan, Inc., 438 F.3d 1374

(Fed. Cir. 2006) (rejecting district courts broad construction of the term adjustable because it

placed too much emphasis on the ordinary meaning without adequate grounding within the

context of the specification); AquaTex Indus., Inc. v. Techniche Solutions, 419 F.3d 1374 (Fed.

Cir. 2005) (holding fiberfill must be limited to synthetic materials, thereby excluding natural

materials, based on the specification and extrinsic evidence that consistently used fiberfill to

refer to synthetic materials).

The decisions of the Federal Circuit hold that courts must ensure that claims are

construed consistently with what was disclosed by the inventor. Ultimately, the interpretation to

be given a term can only be determined and confirmed with a full understanding of what the

inventors actually invented and intended to envelop with the claim. The construction that stays

true to the claim language and most naturally aligns with the patents description of the invention

will be, in the end, the correct construction. Phillips, 415 F.3d at 1316.


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The Prosecution History. In addition to the words of the claim and the specification,

courts should also consider the patents prosecution history, if it is in evidence. Id. at 1317

(citation omitted). The prosecution history consists of the complete record of the proceedings

before the PTO and includes the prior art cited during the examination of the patent. Id. The

prosecution history can be helpful in understanding the meaning of the claims by demonstrating

how the inventor understood the invention and whether the inventor limited the invention in the

course of prosecution, making the claim scope narrower than it would otherwise be. Id.

Extrinsic Evidence. The Court may also consider extrinsic evidence including

dictionaries, treatises, and expert testimony. Id. at 1317. Extrinsic evidence may be useful to

help educate the court regarding the field of the invention and can help the court to determine

what a person of ordinary skill in the art would understand claim terms to mean. Id. at 1319.

However, extrinsic evidence is unlikely to result in a reliable interpretation of patent claim

scope unless considered in the context of the intrinsic evidence. Id.

V. THE PROPER CONSTRUCTION OF THE DISPUTED TERMS

In the following sections, Activision identifies the parties proposed claim constructions

and the areas of dispute, and explains why Activisions proposed constructions should be

adopted. Appendix A contains a table with each of the terms discussed below and each partys

proposed construction.5

5 Activisions Opening Claim Construction Brief and Appendix A contain Worlds proposed constructions that Worlds presented to Activision during the parties exchange of proposed claim terms and constructions and further discussions between the parties in an attempt to narrow the disputes over claim construction.


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A. POSITION OF LESS THAN ALL OF THE OTHER USERS AVATARS

Claim Language Relevant Claims ProposedConstructions position of less than all of the other users avatars

690 Claims 1-20; 558 Claims 4-9; 856 Claim 1; 501 Claims 1-8, 10, 12, 14-16; 998 Claims 1-3, 7-8, 11-20

Activision positions for up to a set maximum number of the other users avatars, which is less than the total number of other users avatars

WorldsNoconstructionnecessary SeeAppendixBforacompletelistofallvariationsofthisclaimterm6

The phrase position of less than all of the other users avatars, or a variation thereof,

appears in all of the asserted claims. This limitation refers to what information the client

receives from the server. Claim 1 of the 690 patent provides an example:

1. A method for enabling a first user to interact with other users in a virtual space, wherein the first user and the other users each have an avatar and a client process associated therewith, and wherein each client process is in communication with a server process, wherein the method comprises:

(a) receiving a position of less than all of the other users avatars from the server process; and

(b) determining, from the received positions, a set of the other users avatars that are to be displayed to the first user,

wherein steps (a) and (b) are performed by the client process associated with the first user.

Claim 1 of the 690 patent is directed to a method for enabling multiple users to interact

in a virtual space, wherein the method comprises: 1) a client receiving positions of less than all

of the other users avatars from the server and 2) the client determining which of the received

users avatars it should display. If one simply looks at this claim in isolation, as Worlds

proposes to do, the claim is broad to the point of being almost meaningless. For example, if a

6 There are ten variations of the phrase position of less than all of the other users avatars that appear in the asserted claims. Activision believes that the variations of this phrase should be construed in the same manner. Thus, Activision addresses only one instance of this phrase in this brief, but has provided a list of all ten variations in Appendix B along with Activisions proposed construction for each variation.


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client receives positions for 999 out of 1000 other users, this would literally constitute receiving

a position of less than all of the other users, even though the client has received positions for

the vast majority of other users and might not be able to display them efficiently. This is

contrary to what is disclosed in the patents.

The claims of a patent cannot be read in a vacuum. Rather, claims must be read in view

of the specification, of which they are a part. Phillips, 415 F. 3d at 1315. Moreover, the claims

of a patent may be broadly written, but the claims can not enlarge what is patented beyond what

the inventor has described as the invention. Netword, LLC, 242 F.3d at 1352. Thus, to

understand what the phrase less than all means, it is necessary to look to the specification.

The specification itself never uses the term less than all to describe how position

information is sent from the server to the client. Rather, the specification of the patents-in-suit

consistently, and without exception, discloses a client-server system in which the server sends a

client positions for up to a set maximum number of the other users avatars. The following

examples are illustrative:

Server 61 maintains a variable, N, which sets the maximum number of other avatars A will see. Hong Decl. Ex. 1, 690 patent at 5:36-37.

Server 61 addresses this problem by maintaining, for each user, a list of the N avatars nearest to the location of that users avatar. Id. at 13:30-32.

User object 64 also maintains a list of the N nearest neighboring remote avatars in the room. This list is used to notify the user objects client 60 regarding changes in the N closest remote avatars and their locations in the room. Id. at 14:41-46.

Each user is placed in exactly one square. Then, for each user, the cells are scanned in an outwardly expanding wave beginning with the cell containing the current user of interest, until at least N neighbors of that user are found. If more, than N are found, the list of neighbors is sorted, and the closest N are taken. Id. at 15:1-6.

See also id. at 5:30-48; 13:23-32; 14:38-49; 14:59-15:6; 15:60-62. Thus, when the claims are

read in light of the invention described in the specification, it is apparent that less than all must

refer to the set maximum number of other users that each client receives from the server.


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The invention disclosed in the patents-in-suit is a method or system whereby the server

sends each client positions for no more than a set maximum number of other users. This is the

only way that the patents disclose how a client receives less than all of the other users. This is

all that the inventors are entitled to claim. See Renishaw PLC v. Marposs Societa per Azioni,

158 F.3d 1243, 1250 (Fed. Cir. 1998) (Ultimately, the interpretation to be given a term can only

be determined and confirmed with a full understanding of what the inventors actually invented

and intended to envelop with the claim.).

Review of the specification also shows that the patentees did not invent a system or

method that sends each client positions of the vast majority of the other users in a large scale

system. Indeed, receiving positions of too many users is exactly the problem that the alleged

invention of the patents-in-suit sought to solve. See Hong Decl. Ex. 1, 690 patent at 13:23-29

([c]rowd control is one of the tougher problems solved by the present system.) As explained

in Section III above, the patents-in-suit provide a system and method for preventing a user from

being overwhelmed by the crowds of avatars likely to occur in a popular virtual world in

other words, a method for performing crowd control. Id. at 5:31-35.

Worlds proposes that the phrase less than all does not need construction and should be

given its plain meaning. Such an approach, however, would result in overly broad claims that

eviscerate the purpose of the disclosed invention. In this regard, the Federal Circuits decision in

On Demand Machine Corp. v. Ingram Indus., Inc., 442 F.3d 1331 (Fed. Cir. 2006) is instructive.

The patent at issue in On Demand was directed to a system for manufacturing a single copy of a

book that is printed and bound upon provision to the customer of computerized information

about the book. Based on a dictionary definition, [t]he district court construed the term

customer to mean anyone who buys goods or services, and that the customer does not have


15

to be an individual consumer or a retail customer. Id. at 1339. The Federal Circuit reversed,

finding that the claims cannot be of broader scope than the invention that is set forth in the

specification. Id. at 1340. The Court noted that the focus of the Ross patent is immediate

single-copy printing and binding initiated by the customer and conducted at the customers site.

Id. In view of the problem that the patent sought to solve and the fact that the specification

repeatedly reinforce[d] its usage of the term customer as the retail consumer, the Court held

that the term customer must be construed more narrowly to apply only to a retail customer. Id.

Similarly, in Curtiss-Wright Flow Control Co. v. Velan, 438 F.3d 1374 (Fed. Cir. 2006),

the Federal Circuit considered the proper construction of the term adjustable. The patent at

issue was directed to a system and a method for de-heading a coke drum. The claim at issue

called for an adjustable dynamic, live loaded seat coupled to said main body. Relying

primarily on the ordinary meaning, the district court defined adjustable to mean that the bias

force on the live loaded seat can be changed in a manner that is not limited by any time, place,

manner, or means of adjustment. Id. at 1378. The Federal Circuit reversed, finding that the

district courts construction placed too much emphasis on the ordinary meaning of adjustable

without adequate grounding of that term within the context of the specification. Id. The Court

articulated two main reasons why the term adjustable needed to be more narrowly defined.

First, the Court found that

the specification of the 714 patent consistently, and without exception, describes adjustment that occurs during operation of the de-header system. The districts courts construction of adjustable, which includes a structure that requires dismantling of the valve to perform the adjustment, finds no support in the overall context of the 714 patent specification.

Id. at 1379. Second, the Court noted that

the district courts construction of adjustable renders that limitation nearly meaningless. This court finds it difficult, if not impossible, to imagine any mechanical device that is not adjustable, under the ordinary meaning of that


16

term adopted by the district court. Almost any mechanical device undergoes change (for instance, when dismantled to replace worn parts) when no consideration is given to the time, place, manner, or means of adjustment.

Id.

The reasoning of the Federal Circuit in Curtiss-Wright applies with equal force to the

construction of the phrase less than all in this case. The specification of the patents-in-suit

consistently, and without exception, describes a system where the client receives no more than a

set maximum number of positions from the server. Moreover, giving the phrase less than all

its ordinary meaning, without adequate grounding in the specification, would render the

limitation nearly meaningless. There are innumerable ways in which a client might receive less

than all of the other users positions, yet except for the setting of a maximum number at the

server, none of these various ways is consistent with or supported by the specification.

For the foregoing reasons, the phrase position of less than all of the other users avatars

should be construed to mean positions for up to a set maximum number of the other users

avatars, which is less than the total number of other users avatars.

B. DETERMINING, FROM THE RECEIVED POSITIONS, [A/THE] SET OF THE OTHER USERS AVATARS THAT ARE TO BE DISPLAYED

Claim Language Relevant Claims Proposed Constructions determining, from the received positions, [a/the] set of the other users avatars that are to be displayed

690 Claims 1-5, 11-14, 19 Activision selecting [a/the] set consisting of up to a set maximum number of the other users avatars to be displayed based on the received positions

Worlds No construction necessary

See Appendix B for a complete list of all variations of this claim term.7 7 There are nine variations of the phrase determining, from the received positions, [a/the] set of the other users avatars that are to be displayed that appear in the asserted claims. Activision believes that the variations of this phrase should be construed in the same manner. Thus, Activision addresses only one instance of this phrase in this brief, but has provided a list of all nine variations in Appendix A along with Activisions proposed construction for each variation.


17

The determining phrase appears in many of the asserted claims, including as the second

step (b) of claim 1 of the 690 patent. Activision asserts that the step of determining refers to

the client selecting a set consisting of up to a set maximum number of the other users avatars to

be displayed based on the received positions.

The step of determining occurs at the client. As an initial matter, claim 1 of the 690

patent requires (b) determining a set of the other users avatars that are to be displayed,

whereas dependent claim 2 of the 690 patent requires the additional step of (d) displaying the

set of the other users avatars based on the orientation of the first users avatar. Thus, the step

of determining (step (b) in claim 1) must be different from and occur before the step of

displaying (step (d) in claim 2). The labeling of the steps as step (b) and step (d) confirms that

the applicants indeed intended to differentiate the step of determining from the step of

displaying.

The process of displaying (or rendering) is described in the specification as follows:

Rendering engine 120 then reads register 114,8 remote avatar position table 112, rooms database 70 and avatar image databases as required, and rendering engine 120 renders a view of the virtual world from the view point (position and orientation) of As avatar.

Hong Decl. Ex. 1, 690 patent at 7:50-54.

The specification discloses only one action by the client before the process of

displaying described above that relates to the determining step the selection of the other

users avatars to include in the remote avatar position table 112. According to the passage cited

above, the rendering engine 120 must read remote avatar position table 112, which contains the

current positions of the in range avatars near As avatar. Id. at 5:30-31. Thus, the step of 8 Register 114 contains the current position and orientation of user As avatar. Hong Decl. Ex. 1, 690 patent at 5:19-20.


18

determining must refer to the identification of the avatars in remote avatar position table 112.

As discussed in Section III above, each client receives up to a set maximum number N

avatars from the server. These avatars are then stored in remote avatar position table 112. Id. at

6:1-2 ([R]emote avatar position table 112 contains an entry for each neighboring avatar.)

However, the patents-in-suit disclose that the client may further filter the set of the other users

avatars that are displayed from the remote avatar position table 112. In particular, the

specification discloses that:

Client 60 also maintains a variable, N, which might be less than N, which indicates the maximum number of avatars client 60 wants to see and/or hear. . . . One reason for setting N less than N is where client 60 is executed by a computer with less computing power than an average machine and tracking N avatars would make processing and rendering of the virtual world too slow.

Id. at 5:37-45.

The specification further states that [w]here N is less than N, the client also uses

position data to select N avatars from the N avatars provided by the server. Id. at 6:6-8

(emphasis added). This is the only disclosure in the specification where the client uses the

positions of the other avatars to select a set of avatars that are to be displayed. Thus, based on

the description in the specification, determining must refer to the client selecting a set

consisting of up to a set maximum number of the other users avatars to be displayed based on

the received positions.

Activisions proposed construction of the determining limitation is further supported by

dependent claim 4 of the 690 patent. That claim specifies that step (1b) of claim 1 (i.e., the

determining step) comprises:

(b)(1) determining from the received positions an actual number of the other users avatars;

(b)(2) determining a maximum number of the other users avatars to be displayed; and


19

(b)(3) comparing the actual number to the maximum number to determine which of the other users avatars are to be displayed

wherein steps (b)(1)-(b)(3) are performed by the client process associated with the first user

As evidenced by the labeling of these steps as (b)(1), (b)(2), and (b)(3), Claim 4

describes a particular method for performing the determining step (b) and is highly informative

as to the meaning of determining. First, under step (b)(1), the client must determine an actual

number of the other users avatars. Under step (b)(2), the client must then determine a maximum

number of avatars to be displayed. Last, under step (b)(3), the client compares the actual number

to the maximum number to determine which avatars to display. Thus, claim 4 confirms that the

step of determining in claim 1 refers to the process of selecting up to a set maximum number

(i.e., N) by the client.

Finally, Activisions proposed construction is also supported by the prosecution history.

During prosecution of the 045 patent, which is the parent of the 690 patent, the applicants

added the following limitation to pending original claim 8 to overcome the Shiio prior art

reference: means for determining from said list of avatars a set of avatars to be displayed at

each client process. Hong Decl. Ex. 6 at 3 (emphasis added). In discussing the addition of the

determining limitation, applicants expressly stated that Claim 8 has been amended to clarify

that each target client process limits the number of avatars displayed in accordance with the

available processing power of the target client. Id. (emphasis added); see also Hong Decl.

Ex. 7, at 5. Thus, in its submissions to the USPTO, the applicants equated the meaning of

determining with identifying up to a maximum number, i.e., a limit, of the other users avatars

to display. Hong Decl. Ex. 6 at 3. The Examiner of the 045 patent accepted this argument and

Applicants later again relied on it during prosecution of the 690 patent to argue that the step of

determining in claim 1 of the 690 patent similarly distinguished the claims from the same


20

Shiio prior art reference. See, e.g., Hong Decl. Ex. 8 at 13.

Based on the disclosure of the specification and the arguments made by applicants during

prosecution, the determining step should be construed to mean selecting a set consisting of up

to a set maximum number of the other users avatars to be displayed based on the received

positions.

C. PARTICIPANT CONDITION / CONDITION

Claim Language Relevant Claims Proposed Constructions a participant condition 501 Claims 1-8,

10, 12, 14-16 Activision a condition set by the client Or, alternatively, Indefinite under 35 U.S.C. 112, 2 Worlds A condition imposed on an avatar, its controlling user, or its associated client device that affects the status or display of an avatar

a condition 998 Claims 1-3, 7- 8, 11-18, 20

Activision a condition set by the client Or, alternatively, Indefinite under 35 U.S.C. 112, 2 Worlds No construction necessary Or, alternatively,

An expression in a software program that affects the status or display of an avatar

The term participant condition appears in all of the claims of the 501 patent and the

term condition appears in claims 1-3, 7-8, 11-18, and 20 of the 998 patent. Claim 1 of the

501 patent provides a representative example:

1. A method for enabling a first user to interact with other users in a virtual space, each user of the first user and the other users being associated with a three dimensional avatar representing said each user in the virtual space, the method comprising the steps of:

customizing, using a processor of a client device, an avatar in response to input by the first user;

receiving, by the client device, position information associated with fewer than all of the other user avatars in an interaction room of the virtual space, from a server process, wherein the client device does not receive


21

position information of at least some avatars that fail to satisfy a participant condition imposed on avatars displayable on a client device display of the client device;

determining, by the client device, a displayable set of the other user avatars associated with the client device display; and

displaying, on the client device display, the displayable set of the other user avatars associated with the client device display.

Activision submits that the Court should construe participant condition and condition

to mean a condition set by the client, and if the Court does not adopt Activisions proposed

constructions, in the alternative, these terms are indefinite.

1. A CONDITION SET BY THE CLIENT

The terms participant condition and condition do not appear in the specification of

the patents-in-suit or in any of the claims of any of the earlier filed patents. To understand the

meaning of these terms, one must carefully consider their context in the claims of the 501 and

998 patents and the disclosure of the patent specification. Activision respectfully submits that

such a careful analysis inevitably leads to Activisions proposed construction for these terms. If

left unconstrued or construed as proposed by Worlds, these claim terms are unacceptably

ambiguous because their boundaries are indeterminable.

The condition limitations are focused on deciding what information the server will send

to each client. Looking first to the language of the claims, all of the claims of the 501 and 998

patents require that the client device receive position information associated with fewer than all

of the other user avatars. This is consistent with the claims of the 690, 558 and 856 patents,

which require the client to receive positions for less than all of the other users. The claims of

the 501 and 998 patents, however, further require that at least some of the avatars for which

the client does not receive position information fail to satisfy a [participant

condition/condition]. Thus, the 501 and 998 patent claims require that: (1) the client receives


22

position information for less than all of the other users avatars, and (2) at least some, but not

necessarily all, of the avatars for which the client does not receive position information are ones

that failed to satisfy a participant condition or condition. The participant

condition/condition is an additional limitation beyond the general selection of up to N avatars

by the server that is also used to decide whether or not position information for an avatar

should be sent to a client. This can be shown graphically as follows:

This interpretation of the claims is consistent with the specification. With regard to

sending position information for less than all of the other users avatars, the specification first

discloses the required default selection of up to N avatars by the server based on proximity.

This is the general crowd control scenario that is always performed by the system. Hong Decl.

Ex. 1, 690 patent at 5:31-37, 13:23-32.

In this example, if N = 4, the server sends to the Client information for four other users (i.e., less than all) of the total users in the virtual space.

The server will send to the Client position information for Other Users 3-6 (4 users total) who are closest in proximity to the Client.

If the Client wishes to block Other User 1 and Other User 2, the Client can set a participant condition or condition that is used by the server.

The server will not send to the Client position information for Other Users 1, 2, and 7-100. The server does not send information about Other Users 1 and 2 because they have failed to satisfy a participant condition / condition and about Other Users 7-100 because they are not among the four users who are in closest proximity to the Client.

Other Users 1 and 2 have failed to satisfy a participant condition / condition and constitute at least some of the users for which the Client did not receive position information.


23

In addition, the specification discusses the option of the client setting some additional

criteria for the server to utilize in selecting the avatars that it will send to that particular client.

For example, the client may set a value of N, which is less than N, and send that value to the

server.9 See, e.g., id. at 5:37-41. In this scenario, the server only sends information to the client

for N of the other users avatars (instead of N). Or the client may send specific user IDs to the

server to identify specific avatars that the client wants to block (so that the client does not receive

any position information for such avatars) because those avatars are unfriendly. Id. at 5:62-67.

In this case, the server would utilize those specific user IDs in connection with its identification

of the up to N avatars to send to the client.

Again, the claim terms participant condition and condition do not appear in the

specification. The discussion of these additional criteria of selecting which of the other users

avatars not to send to a particular client are the only disclosures that possibly relate to

participant condition and condition, as used in the claims of the 501 and 998 patents. The

only manner of establishing how these additional criteria are related is by having the client set

them.

The conditions set by a client such as N or blocking user IDs do not necessarily

apply to all of the avatars that a client does not receive. Thus, these client imposed conditions

apply to at least some of the other users avatars that the client does not receive position

information for, as required by the claims. Moreover, dependent claim 11 of the 501 patent 9 The specification discloses that N, a variable set by the client, may be used by the server or by the client for filtering avatars. See Hong Decl. Ex. 1, 690 patent at 5:40-41 (The value of N can be sent by client 0 to server 61 (server filtering)); 6:6-8 (Where N is less than N, the client also uses position data to select N avatars from the N avatars provided by the server. (client filtering)). For clarification, the claim terms condition and participant condition concern the use of N to perform filtering by the server, while the claim term determining, from the received positions, [a/the] set of the other users avatars that are to be displayed discussed in Section V.B above concerns the use of N to perform filtering by the client.


24

expressly states that the participant condition is based on avatar identifiers (IDs), which is one

of the examples in the specification of a condition that may be set by the client. Accordingly,

when read in light of the specification and the other claims in the 501 and 998 patents, it is

apparent that the terms participant condition and condition refer to a condition set by the

client.

Worlds proposed construction of the term participant condition is not supported by the

specification and generally makes little sense. There is no disclosure in the specification of the

imposition of a condition on a controlling user, or its associated client device. Indeed, it is

unclear how a computer system (client device) could possibly impose a condition on a user of the

computer system. In addition, Worlds proposed construction of the term participant condition

and its proposed alternative construction of the term condition do nothing more than rearrange

the already existing claim language and do not shed any light on the scope of the claim terms.

Accordingly, the Court should adopt Activisions proposed constructions. See Halliburton

Energy Servs., Inc. v. M-I LLC, 514 F. 3d 1244, 1253-54 (Fed. Cir. 2008) (Where there is an

equal choice between a broader and a narrower meaning of a claim, and there is an enabling

disclosure that indicates that the applicant is at least entitled to a claim having the narrower

meaning, we consider the notice function of the claim to be best served by adopting the narrower

meaning.).

2. ALTERNATIVELY, PARTICIPANT CONDITION AND CONDITION ARE INDEFINITE

If the Court does not construe participant condition and condition to mean a

condition set by the client, the Court should find these terms indefinite. Neither these claim

terms themselves nor Worlds proposed constructions adequately define the scope of the term

condition. See Halliburton, 514 F. 3d at 1249 ([C]laims were held indefinite where a


25

person of ordinary skill in the art could not determine the bounds of the claims.); Honeywell

Intl, Inc. v. Intl Trade Commn, 341 F.3d 1332, 1338 (Fed. Cir. 2003) (The definiteness

requirement of 112, 2 focuses on whether the claims, as interpreted in view of the written

description, adequately perform their function of notifying the public of the [scope of the]

patentees right to exclude. (citation omitted)); Novo Industries, L.P. v. Micro Molds Corp.,

350 F.3d 1348, 1358 (Fed. Cir. 2003) (Determining whether a claim is definite requires an

analysis of whether one skilled in the art would understand the bounds of the claim when read in

light of the specification. (citation omitted)).

On their face, the terms participant condition and condition have no apparent

boundaries. They potentially embrace any condition that would result in a client not receiving

the information of other users avatars who fail to satisfy that condition. Such conditions

could be completely unrelated to the system disclosed in the patent, arbitrary, unpredictable,

subjective, or even be nonsensical, yet would be covered by the claims.

Worlds proposed constructions do not solve this problem. They do not allow one to

identify the range of conditions or expressions in a software program that would affect[] the

status or display of an avatar. Thus, if the terms participant condition and condition do not

mean a condition set by the client, a person of ordinary skill in the art is truly left to wonder

what types of conditions are encompassed by the claims. See Halliburton, 514 F. 3d at 1253

(While patentees are allowed to claim their inventions broadly, they must do so in a way that

distinctly identifies the boundaries of their claims.).

For the foregoing reasons, if Activisions proposed constructions are not adopted, the

terms participant condition and condition should be found indefinite.


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D. PROGRAMMED TO LIMIT . . .

Claim Language Relevant Claims Proposed Constructions programmed to limit the number of remote user avatars shown on the graphic display

998 Claims 11-15 Activision programmed to restrict the number of remote user avatars shown on the graphic display to a maximum number of avatars allowed


Claims 11-15 of the 998 patent are directed to various ways in which the claimed system

is programmed to limit the number of remote user avatars shown on the graphic display. For

example, claim 11 requires that the system is programmed to limit the number of remote user

avatars shown on the graphic display based on the proximity of the remote user avatars relative

to the local user. Consistent with the ordinary meaning of the term limit and its use in the

specification, this phrase means programmed to restrict the number of remote user avatars

shown on the graphic display to a maximum number of avatars allowed.

The following are some general dictionary definitions of the term limit:

limit (v.) means To restrict or confine within limits Websters II New College Dictionary (1995) (Hong Decl., Ex. 9 at 636).

limit (n.) means The greatest number or amount allowed Websters II New College Dictionary (1995) (Id.).

limit (v.) means set or serve as a limit to or restrict The Oxford Encyclopedic English Dictionary, 2d. ed. (1995) (Hong Decl., Ex. 10 at 832).

limit (n.) means the greatest or smallest amount permissible or possible (upper limit; lower limit) The Oxford Encyclopedic English Dictionary, 2d. ed. (1995) (Id.).

limit (v.) means To confine or restrict within a boundary or bounds or To fix definitely; to specify The American Heritage College Dictionary, 3d ed. (1993) (Hong Decl. Ex. 11 at 787).

limit (n.) means The greatest or least amount, number, or extent allowed or possible The American Heritage College Dictionary, 3d ed. (1993) (Id.).

The specification of the patents-in-suit uses the term limit in a way that is consistent

with the above definitions. For example, the specification states


27

Generally, the limit set by server 61 of N avatars and the limit set by client 60 of N avatars control how many avatars A sees. If server 61 sets a very high value for N, then the limit set by client 60 is the only controlling factor.

Hong Decl. Ex. 1, 690 patent at 5:55-58 (emphasis added).

Both the dictionary definition of limit and the use of the term in the specification,

involve setting a boundary of the greatest number of avatars allowed to be displayed. In the

patents-in-suit, the setting of a limit by the client involves setting a maximum number, N, of

other users to display. This is a definite, specified boundary on the number of avatars to display.

In view of this disclosure and the ordinary meaning, the phrase should be construed to require

restriction of the number of avatars displayed to a maximum set number.

Worlds argues that no construction of this term is necessary. However, Worlds

infringement contentions in this case reveal that Worlds is not applying the ordinary meaning of

the term as read in light of the specification. For example, Worlds asserts that Activisions Call

of Duty game meets this limitation in claim 12 of the 998 patent because [t]he client processor

only renders avatars in its field of view, and this field of view is based on the position and

orientation of the local avatar. D.I. 58, Worlds First Supplemental Amendment to the

Preliminary Disclosure of the Claims Infringed, Ex J at p. 12. Although the number of avatars

within a players field of view may be less than the total number of avatars that the client has

received position information for, the client is not programmed to limit the number of remote

user avatars shown because there is no specified boundary on the number of avatars to display.

Depending on which avatars fall within the field of view, the client may display all of the

avatars, some of the avatars, or none of the avatars. Thus, Worlds proposal that this term need

not be construed is simply an invitation for Worlds to argue infringement based on an

interpretation of the claims that is inconsistent with the ordinary meaning.


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E. AVATAR

Claim Language Relevant Claims

Proposed Constructions

avatar 690 Claims 1-20; 558 Claims 4-9; 856 Claim 1; 501 Claims 1-8, 10, 12, 14-16; 998 Claims 1-3, 7-8, 11-20

Activision a graphical representation of a user

Worlds graphical representation of a user in three-dimensional form

The term avatar is used in the patents-in-suit in accordance with its ordinary meaning.

Both parties agree that an avatar is a graphical representation of a user. However, Worlds

proposes to limit the claims to three-dimensional avatars.

Worlds proposed limitation should be rejected for at least two reasons. First, the ordinary

meaning of avatar to a person of ordinary skill in the art and as used in the specification is not

limited to a graphical representation in three-dimensional form. See, e.g., Hong Decl. Ex. 12 at

45, Websters New World Dictionary of Computing Terms, 6th ed. (1997) (avatar A graphical

representation of a person that appears on the computer screen in an interactive game or

communication system.); Ex. 13 at 38, Microsoft Computer Dictionary, 4th ed. (1999) (avatar

n. In virtual-reality environments such as certain types of Internet chat rooms, a graphical

representation of a user. An avatar typically is a generic picture or animation of a human of

either gender, a photograph or caricature of the user, a picture or animation of an animal, or an

object chosen by the user to depict his or her virtual-reality identity.).

Moreover, the claims of the 501 and 998 patents, unlike the claims of the 690, 558

and 856 patent, expressly require that the avatars are three-dimensional. Thus, construing the

term avatar to require a three-dimensional form would improperly render this language in the

claims of the 501 and 998 patents superfluous. See Bicon, Inc. v. The Straumann Co., 441 F.3d

945, 950 (Fed. Cir. 2006) (Allowing a patentee to argue that physical structures and


29

characteristics specifically described in a claim are merely superfluous would render the scope of

the patent ambiguous, leaving examiners and the public to guess about which claim language the

drafter deems necessary to his claimed invention and which language is merely superfluous,

nonlimiting elaboration. For this reason, claims are interpreted with an eye towards giving effect

to all terms in the claim,); Merck & Co. v. Teva Pharm. USA, Inc., 395 F.3d 1364, 1372 (Fed.

Cir. 2005) (A claim construction that gives meaning to all the terms of the claim is preferred

over one that does not do so.).

Finally, the specification does not provide any basis for limiting the claimed avatars to

avatars that are in three-dimensional form. In fact, the specification uses the term three-

dimensional to refer to avatars that are rendered using two-dimensional panels:

The orientation is needed for rendering because the avatar images are three-dimensional and look different (in most cases) from different angles. . . . In a simple embodiment, each avatar image comprises M panels (where M is greater than two with eight being a suitable number) and the i-th panel is the view of the avatar at an angle of 360*i/M degrees.


Accordingly, the term three-dimensional is used in the specification to refer to an

avatar that is actually comprised of multiple two-dimensional panels. At any given time, only

one of the panels is seen as the avatar by another user. The avatar looks different from different

angles because the particular two-dimensional panel that is seen depends on the perspective from

which the avatar is viewed for example, when looking at the front, a 2-D graphic of the front of

the avatar is displayed, but when looking from the back, a 2-D graphic of the back of the avatar

is displayed. Thus, if the term avatar in the claims were to be limited to what is disclosed in

the specification, the proper construction would be a graphical representation made from two-

dimensional panels that looks different from different angles. However, because the patent uses

the term avatar in accordance with its ordinary meaning, the term should simply be construed


30

to mean a graphical representation of a user.

F. CLIENT PROCESS / SERVER PROCESS

Claim Language Relevant Claims Proposed Constructions client process 690 Claims 1-20;

558 Claims 1-9; 856 Claim 1

Activision a program being executed by a users computer that receives services from a server

Worlds software that runs on a users computer to provide access to a server, so as to allow participation in a shared virtual experience

server process 690 Claims 1-20; 558 Claims 1-7; 856 Claim 1; 501 Claims 1-8, 10, 14-16

Activision a program being executed by a computer that provides services to a client

Worlds software that provides one or more services to users of other computers across a network, so as to facilitate participation in a shared virtual experience

The primary difference between the parties positions on these terms is that Activision

contends that a process refers to a software program that is being executed on a processor,

whereas Worlds contends that process refers to the software program alone. Worlds proposed

construction attempts to equate process with software and is contrary to the ordinary

meaning of the term to those of ordinary skill in the art and as used in the patent specification

and claims. Activisions proposed construction should be adopted because it is consistent with

the ordinary meaning of the term as used in the art and in the patents-in-suit.

The patents-in-suit utilize the term process in accordance with its ordinary meaning.

For example, the specification states that

A person of ordinary skill in the art of computer programming will also understand that where a process is described with reference to a client or server, that process could be a program executed by a CPU in that client or server system . . .

Hong Decl. Ex. 1, 690 patent at 4:25-31. The reference to a process as a program executed by

a CPU is consistent with the dictionary definition of process, which is a program while being

executed, usually as one of several in a multiprogramming environment. Hong Decl. Ex. 14 at


31

109, The Dictionary of Computer Graphics and Virtual Reality, 2d ed. (1995) (emphasis added).

Furthermore, while some claims in the patents-in-suit refer to a process, others refer to a

processor (e.g., Hong Decl. Ex. 4, 501 claims 1-8, 10, 12, 14-16; Ex. 5, 998 claims 1-3, 7-

8,11-20) or software program (e.g., Hong Decl. Ex. 1, 690 claims 11-20). This further

supports the fact that a process requires something different from a software program, or the

processor on which the software program runs.

The terms client and server are also used in accordance with their ordinary meaning.

Specifically, the specification states that:

A client-server network is a network where one or more servers are coupled to one or more clients over a communications channel. . . . A server object is one which waits for a request from a client object and then performs some service in response to the client request. A client is an object that makes the request.

Hong Decl. Ex. 1, 690 patent, col. 1:14-27. Consistent with this disclosure, Activisions

proposed constructions reflect that a server process involves a computer that provides services

to a client and a client process involves a users computer that receives services from a server.

Furthermore, although Worlds proposed construction of client process attempts to

define the term with reference to a server, Worlds proposed construction of server process

makes no mention of either a client or a server and is thus overly broad.

G. TERMS THAT ARE INDEFINITE

The patent statute requires that every patent conclude with one or more claims

particularly pointing out and distinctly claiming the subject matter which the applicant regards as

his invention. 35 U.S.C. 112 2. The definiteness requirement of 112, 2 focuses on

whether the claims, as interpreted in view of the written description, adequately perform their

function of notifying the public of the [scope of the] patentees right to exclude. Honeywell

Intl, Inc. v. Intl Trade Commn, 341 F.3d 1332, 1338 (Fed. Cir. 2003); see also Datamize, LLC


32

v. Plumtree Software, Inc., 417 F.3d 1342, 1347 (Fed. Cir. 2005) ([T]he purpose of the

definiteness requirement is to ensure that the claims delineate the scope of the invention using

language that adequately notifies the public of the patentees right to exclude.).

A determination of claim indefiniteness is a legal conclusion that is drawn from the

courts performance of its duty as the construer of patent claims. Datamize, 417 F.3d at 1347.

If the Court determines that a claim is not amenable to construction, then the claim is invalid

as indefinite under 35 U.S.C. 112, 2. Honeywell, 341 F.3d at 1338; Datamize, 417 F.3d at

1347 (Only claims not amenable to construction or insolubly ambiguous are indefinite.)

1. SYNCHRONOUSLY DISSEMINATING POSITIONS

Claim Language Relevant Claims Proposed Constructions synchronously disseminating positions

690 Claims 9, 18, 20

Activision Indefinite under 35 U.S.C. 112, 2

Worlds Transmitting in a manner that is synchronized or coordinated

Independent claims 9 and 18 of the 690 patent contain the step of synchronously

disseminating less than all of the positions of the avatars not associated with a particular client

process. Activision contends that the term synchronously disseminating is insolubly

ambiguous and is, therefore, indefinite.

The term synchronously disseminating is not a term that has any ordinary meaning.

And the term synchronous may have different meanings depending on its context. For

example, Websters II New College Dictionary (1995) defines synchronous to mean

Happening at the same time or Having identical periods. Hong Decl. Ex. 9 at 1118. Thus,

the ordinary meaning of synchronous may refer to something happening at the same time, or

something happening at equal intervals.

The absence of any generally understood meaning for a claim term does not in and of


33

itself make the term indefinite. As a general matter, a claim that contains an ambiguous term is

not indefinite when the meaning of the term may be readily ascertained from the description in

the specification. See, e.g., Energizer Holdings, Inc. v. Intl Trade Commn, 435 F.3d 1366,

1369 (Fed. Cir. 2006) (citation omitted). In this case, however, the specification does nothing to

resolve the ambiguity in the term synchronously disseminating. The term synchronously

does not appear anywhere in the specification. Indeed, the specification does not even discuss a

concept that could reasonably be equated with this term, and there is no suggestion in the

specification of any advantage to be derived from the manner in which position information is

disseminated (i.e., synchronously or otherwise). The closest that the specification comes to

mentioning the term synchronously is the following discussion that includes the term

asynchronously:

In rendering a view, client 60 requests the locations, orientations and avatar image pointers of neighboring remote avatars from server 61 and the servers responses are stored in remote avatar position table 112. Server 61 might also respond with entries for short object ID lookup table 110. Alternatively, the updates can be done asynchronously, with server 61 sending periodic updates in response to a client request or automatically without request.

Hong Decl. Ex. 1, 690 patent at 7:42-49 (emphasis added).

This disclosure, however, is nonsensical. It appears to juxtapose the descriptions that

precede and follow the word [a]lternatively, thereby suggesting that the preceding description

refers to synchronous updates, whereas the following description refers to asynchronous updates.

However, the preceding description merely describes a scenario where the client requests and

then receives services from a server; and this same scenario is described with regard to the

meaning of asynchronously. Thus, both descriptions refer to updates made by a server in

response to a client request and this passage sheds no light on the meaning of synchronously

disseminating. Moreover, nothing in the above disclosure seems to relate in any way to the


34

ordinary meanings of the term synchronous.

Worlds proposed construction also fails to resolve the ambiguity in this term. Rather

than define the term synchronously, Worlds simply replaces it with the term synchronized,

and then adds the even more ambiguous term coordinated. Defining synchronous

dissemination to mean transmitting in a manner that is synchronized is a non-construction that is

still plagued by the ambiguity of the term synchronized. Furthermore, there is absolutely no

basis in the intrinsic evidence, or otherwise, for defining synchronously to mean

coordinated. Even if there were, this construction provides no guidance as to what it means to

transmit positions in a manner that is coordinated.

Because it is not possible to construe the phrase synchronously disseminating, it is

indefinite.

2. THIRD USER PERSPECTIVE

Claim Language Relevant Claims Proposed Constructions third user perspective 998 Claims 2-18 Activision Indefinite under

35 U.S.C. 112, 2


Independent claim 2 of the 998 patent claims a system that is programmed to switch

between a rendering on the graphic display that shows the virtual world to the local user from a

third user perspective and a rendering that allows the local user to view the local user avatar in

the virtual world. Because the term third user perspective has no ordinary meaning and is not

described anywhere in the patent or prosecution history, it is indefinite.

The meaning of the term third user perspective cannot be determined from its usage in

the claims. One possibility would be that it refers to a perspective of an avatar other than the

local user. However, this interpretation seems unlikely because claim 1 of the 998 patent

explicitly refers to a perspective of one of the remote user avatars. Thus, when the patentees


35

wanted to refer to such a perspective, they clearly did so. Moreover, as noted below, there is no

disclosure anywhere in the specification that would suggest that this is the meaning of third user

perspective. Indeed, there is no disclosure at all of rendering a view from the perspective of

another user.

Another possible interpretation would be that it means a third-person perspective, which

generally refers to a view of a user from a perspective that is not associated with any other users.

However, this construction makes no sense in the context of the claim. The claim requires

switching from a third user perspective to a rendering that allows the local user to view its own

avatar. Yet, a third-person perspective already allows the local user to view the local user avatar

in the virtual world. Thus, there would be nothing to switch to.

The specification does not shed any light on the meaning of the term third user

perspective. In fact, the specification is almost entirely devoid of any disclosure about

switching perspectives. The following is the only disclosure that relates in any way to changing

the viewers perspective:

Each user interacts with a client machine (not shown) which produces a display similar to screen display 10, but from the perspective of the avatar for that client/user. Screen display 10 is the view from the perspective of a third user, D, whose avatar is not shown since Ds avatar is not within Ds own view. Typically, a user cannot see his or her own avatar unless the chat system allows our of body viewing or the avatars image is reflected in a mirrored object in the virtual world.


This disclosure does not help in understanding the meaning of third user perspective.

Assuming that our of body should read, out of body, the patent does not explain what is

meant by out-of-body viewing. This could refer to a remote user perspective, a third-person

perspective, or some other perspective. In any case, however, the perspective would include a

view of the local user avatar because the specification states that a user cannot see his or her


36

own avatar unless the chat system allows out [sic] of body viewing. Id. at at 3:26-28. Thus,

according to the specification, out of body viewing is a view that allows a user to see his or her

avatar. Therefore, it would be nonsensical to switch from an out of body view to a view that

allows the local user to see his avatar. The disclosure of seeing ones reflection in a mirror

suffers from the same problem.

It is simply not possible to know, based on the claims or the specification, what was

meant by third user perspective. Thus, the scope of the claim cannot be discerned and the

claims that include this term are invalid as indefinite.

3. A RENDERING IN WHICH ALL OF A PERSPECTIVE VIEW OF A LOCAL USER AVATAR OF THE LOCAL USER IS DISPLAYED

Claim Language Relevant Claims Proposed Constructions switch between a rendering in which all of a perspective view of a local user avatar of the local user is displayed and a rendering in which less than all of the perspective view is displayed

998 Claim 19 Activision Indefinite under 35 U.S.C. 112, 2

Worlds No construction necessary Or, alternatively,

Switch between a graphical representation in which all of a local users field of view is displayed, and a graphical representation in which less than all of a local users field of view is displayed

Like independent claims 1 and 2 of the 998 patent, independent claim 19 includes a

requirement of switching perspectives. In claim 19, the switching is between all of a

perspective view and less than all of the perspective view.

The term perspective view does not appear anywhere in the specification of the

patents-in-suit. Thus, the specification does not contain any explanation of what would

constitute all of a perspective view. Nor does it disclose how to switch between a rendering of

all of a perspective view and less than all of the perspective view.

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